Utility Patents: Another Strategy to Protect Your Beauty and Cosmetics Portfolio | Knobbe Martens


On October 27, 2020, the District Court for the West District of Texas issued its final judgment in L’Oréal USA Creative, Inc. v. Drunk Elephant, LLC, 1: 18-cv-00982 (WDTex.), who approved the joint termination stipulation for a settlement between L’Oréal USA Creative Inc. (“L’Oréal”) and Drunk Elephant, LLC (“Drunk Elephant”) thus officially ending the two-year legal battle between the parts .

Drunk Elephant, founded by beauty entrepreneur Tiffany Masterson in 2013 and bought by Shiseido in October 2019 amid this legal battle, is an example of the growing number of beauty start-ups that have gained market share through concepts such as “clean beauty” and using direct-to-consumer business models.

In the complaint filed on November 14, 2018, L’Oréal alleged that Drunk Elephant’s C-Firma Day Serum infringed U.S. Patent No. 7,178,841 (the “‘841 Patent”) which covers a skincare formula for the skin containing L-ascorbic acid and a derivative of cinnamic acid. in specified amounts and in combination with other ingredients.

In Drunk Elephant’s response to the amended complaint, Drunk Elephant denied claims that its C-Firma daytime serum directly or indirectly infringed the ‘841 patent, asked the court to declare that the product did not infringe and that the ‘841 patent was invalid, and filed an unfair conduct complaint with the patent office.

Although the terms of the settlement are confidential, it appears that C-Firma Day Serum is still available for purchase.

This case illustrates the highly competitive nature of the “$ 500 Billion Plus” beauty and cosmetics industry, and how beauty and cosmetics companies can consider the use of utility patent protection as well as ‘other strategies such as trade secrets and trademarks / trade dress to protect their businesses and know-how. For example, L’Oréal’s 2019 annual report found that it had filed 497 patents during the year.

Utility patents cover new and useful processes, machines, fabrications, or compositions of matter. They also protect the functional aspects of a useful invention and offer 20 years of exclusivity. As illustrated with the L’Oréal case, beauty and cosmetics companies may be interested in obtaining patent protection to protect new formulations, especially if the entity has already invested significant time and resources. to develop these products.

On the other hand, before making a substantial investment in a product, established brands and startups in the beauty and cosmetics industry may want to do some research to see if there are any patents that could negatively affect their ability to put a product on the market. . An early analysis of the patent landscape could save the company a lot of time and money in pursuing projects that could expose it to claims of patent infringement.

The trend of using patent protection in the beauty and cosmetics industry is here to stay. Experts predict that skin care patents “will continue to increase for years to come”, especially given the post-COVID-19 world where consumers “will potentially seek to avoid post-COVID beauty dates.” 19 in favor of the use of new technologies in their own homes. , and as companies rush to innovate (and protect their innovations) in order to appeal to consumers in unprecedented ways and stand out in this booming market.

Publisher: Catherine Hollande


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